Ex Parte Forst

Board of Patent Appeals and Interferences

Feb 1, 2010

10969194 (B.P.A.I. Feb. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES A. FORST
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Appeal 2009-004615
Application 10/969,194
Technology Center 1700
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Decided: February 1, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2-18, 20-28, 36 and 37. Claims 1 and 19 have been
canceled and claims 29-35 stand withdrawn from consideration by the
Examiner. We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The Appellant claims a kit and system for cleaning the barrel of a
firearm. Claims 15 and 36 are illustrative:
15. A kit for cleaning the barrel of a firearm, the kit
comprising:
a) at least one low odor cleaning composition, the
cleaning composition formulated for cleaning the barrel of the
firearm; and
b) at least one neutralizer that is pre-applied to a cloth,
the neutralizer, when applied to the barrel of the firearm, further
reduces any odors left from the cleaning composition.

36. A system for cleaning the barrel of a firearm, the
system comprising:
a) a first cleaning composition formulated as a low odor
cleaning composition for cleaning the barrel of the gun; and
b) a second composition which is a neutralizer that when
applied to the barrel of the firearm after the first cleaning
composition, further reduces any odors left from the cleaning
composition.

The References
Reick 4,333,840 Jun. 8, 1982
Foley 2002/0169090 A1 Nov. 14, 2002
Schlosser 2005/0049162 A1 Mar. 3, 2005
(filed Aug. 29, 2003)
The Rejections
The claims stand rejected as follows: claims 2-18, 19-28, 36 and 37
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter the Appellant
regards as the invention; claims 4-16, 20, 21, 24-28, 36 and 37 under
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35 U.S.C. § 103 over Schlosser in view of Foley; and claims 2, 3, 17, 18, 22
and 23 under 35 U.S.C. § 103 over Schlosser in view of Foley and Reick.1
OPINION
We affirm the Examiner’s rejections.
Rejection under 35 U.S.C. § 112, second paragraph
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the Appellant’s claim term “low odor” would have been
indefinite to one of ordinary skill in the art?
Analysis
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries, Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). When
a word of degree such as “low” is used in a claim, the specification must
provide some standard for measuring that degree such that one of ordinary
skill in the art would understand what is claimed when the claim is read in
light of the specification. See Seattle Box Co., Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
The Appellant’s independent claims 15, 36 and 37 recite “low odor
cleaning composition”, dependent claims 2 and 23 recite “low odor mineral
oil”, and dependent claims 17 and 18 recite “low odor lubricant.”
The Examiner argues that the Appellant’s claim term “low odor”
would have been indefinite to one of ordinary skill in the art because “the

1 A rejection of claims 2-18, 19-28, 36 and 37 under 35 U.S.C. § 112, first
paragraph, written description requirement, is withdrawn in the Examiner’s
Answer (Ans. 3).
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specification does not provide a standard for ascertaining the requisite
degree” (Ans. 3, 7). The Examiner argues that “in the absence of a
definition or guidance with respect to the term ‘low odor’ in the instant
specification, one of ordinary skill in the art would not be able to determine
which compositions fall within and outside the scope of the instant claims
and thus, would not be able to determine the metes and bounds of the
claimed invention” (Ans. 7).
The Appellant argues that Schlosser discloses amines that have very
low odor and that ammonia produces an irritating odor (¶¶ 0014, 0026)
(Br. 14).
Although Schlosser states that some of the amines have a very low
odor, Schlosser does not provide a standard for determining what is low
versus not low.
The Appellant argues that “low odor” or “substantially no odor” is
employed throughout the Appellant’s Specification (Reply Br. 3).
The term used throughout the Appellant’s Specification is
“substantially odorless” (Spec. 1:31, 2:11, 27-28, 3:8-9, 4:28 and 7:3). That
is not the claim term at issue. Nor is “substantially odor-free” (Spec. 2:25)
or “odorless” (Spec. 6:6) which also are used in the Appellant’s
Specification.
The Appellant argues that the Appellant’s Specification at page 7,
lines 11-14 and page 10, lines 10-18 describes solvents as having “low odor”
and “lower odor” (Reply Br. 3-4).
The Appellant’s Specification states at page 7, lines 11-14 that
“[m]ost suitably, the solvents have relatively low odor when compared with
other solvents” (Spec. 7:11-12). That disclosure permits the solvent odor to
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be high provided that it is relatively low compared to other solvents. The
Appellant’s Specification states at page 10, lines 10-18 that
monoethanolamine may be more effective at dissolving copper than
triethanolamine but has a slightly stronger odor, and that “it is desirable to
employ a copper-dissolving compound which has a balance of acceptable
copper dissolution and lower odor” (Spec. 10:14-18). Again, the
Appellant’s Specification indicates that the solvent odor is preferably
relatively low, but does not provide a standard for determining how
relatively low the odor must be to fall within the Appellant’s claim term
“low.”
The Appellant argues that “Applicant has also explained that the use
of the term ‘low odor’ is for the purpose of preventing game such as deer or
other large game animals, from detecting, via olfactory systems, the cleaners
or lubricants employed in cleaning the firearms” (Reply Br. 4).
The Appellant’s Specification states that “[t]he present invention
relates to a substantially odorless cleaning system for firearms or other
sporting equipment for which it is desirable that the cleaning system not
leave residual odors which can be detected by game” (Spec. 1:31-33). The
Appellant’s Specification, however, does not limit “low odor” to
“substantially odorless” or to odors which cannot be detected by game but,
rather, as discussed above, indicates that “low odor” merely means that the
solvent odor is low relative to other solvents (Spec. 7:11-12; 10:14-18).
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the Appellant’s claim term “low odor” would have been
indefinite to one of ordinary skill in the art.
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Rejections under 35 U.S.C. § 103
In some instances, it may be impossible to determine whether or not
claimed subject matter is anticipated by or would have been obvious over
references because the claims are so indefinite that considerable speculation
and assumptions would be required regarding the meaning of terms
employed in the claims with respect to the scope of the claims. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962). In other instances, however, it is
possible to make a reasonable, conditional interpretation of claims adequate
for the purpose of resolving patentability issues to avoid piecemeal appellate
review. In the interest of administrative and judicial economy, this course is
appropriate wherever reasonably possible. See Ex parte Saceman, 27
USPQ2d 1472, 1474 (BPAI 1993); Ex parte Ionescu, 222 USPQ 537, 540
(BPAI 1984).
In the present case, we consider such a reasonable, conditional
interpretation to be possible. This interpretation is that the composition’s
odor is sufficiently low for the composition to be useful in cleaning a firearm
barrel.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a low odor cleaning composition
in combination with a neutralizer for reducing odors from the cleaning
composition?
Findings of Fact
Schlosser discloses a cleaning composition for removing copper
residue from a gun barrel, comprising polyphosphonic acid, an amine and
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water (¶¶ 0001, 0015). Schlosser believes “that the amine complexes copper
species, facilitating removal of copper from the surface being treated”
(¶ 0028). “[W]here the amine is an amino acid or a hydroxyl-substituted
amine or a polyethylene diamine, the composition may have a very low
odor” (¶ 0026). The composition does not include ammonia which produces
an irritating odor, and does not include petroleum solvents (¶ 0014).
Foley discloses a composition comprising a soil swelling agent and a
thickening system for removing cooked-, baked- and burnt-on soils from
cookware and tableware (¶¶ 0001, 0010). Foley teaches that organic
solvents perceived by consumers as being malodorous are a problem
(¶ 0053). Foley uses a select combination of perfume materials to mask or
reduce the intensity of solvent malodors (¶¶ 0054, 0103-0132). “The
composition can additionally comprise a cyclodextrin, in order to help
control solvent malodor” (¶ 0066).2, 3 Foley’s solvents include amines
(¶ 0076).
Analysis
The Appellant argues that “because Schlosser does not employ any
organic solvents, one would not be lead [sic] to employ the perfume and
optionally cyclodextrin of Foley et al. in the copper removal compositions of
Schlosser to reduce solvent malodor” (Br. 15).
The Appellant acknowledges that gun cleaning composition residual
odor was a known problem in the art (Spec. 1:16-21), and Schlosser’s
disclosure that “the composition may have a very low odor” (¶ 0026)

2 Cyclodextrin is one of the Appellant’s odor neutralizers (Spec. 12:25;
Claim 37).
3 The Appellant does not separately argue the claims to which Reick is
applied (Br. 18). Accordingly, we do not further discuss Reick.
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appears to indicate that known problem. Accordingly, one of ordinary skill
in the art would have desired to remove the residual odor from Schlosser’s
cleaning composition. Schlosser’s cleaning compositions contain amines
(¶ 0024), and Foley discloses that cyclodextrin is effective for absorbing
malodor from solvents which can be amines (¶¶ 0066, 0076). Schlosser and
Foley, therefore, would have led one of ordinary skill in the art, through no
more than ordinary creativity, to use cyclodextrin to remove the residual
odor from Schlosser’s cleaning composition. See KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”).
The Appellant argues that Foley is nonanalogous art (Br. 16; Reply
Br. 9-10).
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor’s endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
Because Foley discloses that cyclodextrin controls solvent malodor
(¶ 0066), Foley logically would have commended itself to the Appellant’s
attention in considering the Appellant’s problem of solvent malodor control.
Foley, therefore, is analogous art.
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The Appellant argues that “while Schlosser recognizes that there was
an odor problem with ammonia, there is no recognition of an odor problem
with any other type of solvent in the gun cleaning compositions disclosed
therein” (Br. 16). The Appellant argues that Schlosser fails to recognize a
problem with low odor compositions (Reply Br. 6).
Schlosser’s disclosure, when discussing the amine, that “the
composition may have a very low odor” (¶ 0026) would have indicated to
one of ordinary skill in the art that control of odor from the amines,
including the low odor amines, is desirable.
The Appellant argues that “if the combination were proper, one of
skill in the art might arguably be lead [sic] to add cyclodextrin to a single
gun cleaning composition, but nothing in either document would lead one to
employ cyclodextrin in a second neutralizing composition separate from the
cleaning composition, a most important feature of Applicant’s independent
claims” (Br. 17),
In view of the known problem of gun cleaning composition residual
odor acknowledged by the Appellant (Spec. 1:16-21) and indicated by
Schlosser (¶ 0026), one of ordinary skill in the art, through no more than
ordinary creativity, would have been led by Foley’s disclosure that
cyclodextrin is effective for absorbing malodor from solvents including
amines (¶¶ 0066, 0076) to provide cyclodextrin as a separate composition
from Schlosser’s amine-containing cleaning composition to absorb residual
amine odors from the cleaning composition. See KSR, 550 U.S. at 418.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
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obvious, to one of ordinary skill in the art, a low odor cleaning composition
in combination with a neutralizer for reducing odors from the cleaning
composition.
DECISION/ORDER
The rejection under 35 U.S.C. § 112, second paragraph, of claims 2-
18, 19-28, 36 and 37, and the rejections under 35 U.S.C. § 103 of claims 4-
16, 20, 21, 24-28, 36 and 37 over Schlosser in view of Foley, and claims 2,
3, 17, 18, 22 and 23 over Schlosser in view of Foley and Reick are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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